A tilt observed towards simplifying Form 27

The Stakeholder Meeting in relation to the issue of working statements was held on April 6, 2018.  The meeting was presided by the Controller General, Mr. O.P. Gupta who was ably assisted by Dr. K.S. Kardam, Mr. B.P. Singh and Dr. Usha Rao. Anand and Anand was represented by Ms. Archana Shanker.

  1. The CG clarified the mandate of the stakeholder meeting which was “revision of Form 27” within the framework of Section 146(2) and Section 122. The meeting was well represented by IP law firms, SME, FICCI, FICPI, Academicians, NGO and industry.
  2. While there were suggestions with regard to having separate form 27 for pharma and non-Pharma patents, majority of the stakeholders were of the view that filing of form 27 is onerous and the consequences for non-compliance is a big deterrent for not filing patents in India.
  3. It was also discussed that From 27 moves on the assumption that every product can be mapped to a patent and the cost /quantum can easily be determined.
  4. Several members of the ICT / automobile industry indicated that it was hard and impossible to give this information requested in Form 27 for several reasons such as there is an assumption that every product can be mapped to a patent and the cost /quantum can easily be determined.
  5. Anand and Anand made the following recommendations and also submitted Revised Form-27:
    • That the discrepancies in Form 27 should be removed;
    • A simple format should be prescribed without compromising the requirements prescribed in the law;
    • Introduction of IPC classification so as to analyse the working statements (industry wise) and use is as a tool to clear bottlenecks if any and make recommendations to the government;
    • Confidential information should not be requested and there should be a provision to keep important business information confidential which can be produced on demand under the terms of confidentiality;
    • As there is a difficultly in accurately determining the value of a patented invention that is incorporated into a product or apportioning a value to a patent incorporated into a product that is covered by multiple patents, the requirement of providing the quantum and price be done away with;
    • Expressions such as “quantum and value”, “whether public requirement has been met partially, adequately or to the fullest extent” be deleted as these are all subjective test and the patentees are under no obligation to carry out such an analysis for the purpose of form 27;
    • ‘Reasonable price’ is an ambiguous term and therefore should be deleted. What might be reasonable for an innovator company might not be considered as being reasonable for another company.  Also over the years, as technology evolves, the value of products drop even though the said product might still be covered by said patent(s);
    • There should be an option of filing one form 27 for a cluster of patents;
    • Disclosure of name of licensees should not be mandatory as there are comprehensive/worldwide license agreements including cross license agreements and it may not be possible to provide detailed information as currently required under Form 27.
Advertisements

Request for withdrawal of post-grant opposition not allowed

A patent granted in favor of M/s J. C. Bamford Excavators Ltd. has been revoked by Deputy Controller of patents and Design, Mr. Naveen Mathur in a post grant opposition on the grounds of non-compliance of Section 8 of the Indian Patents Act. The revocation is based on only the formal ground of section 8 and the controller has held the patent to be not only novel but also inventive.

The controller held that the applicant has failed to inform the controller about the Australian application and the Form 3 filed in December 2011 was filed beyond the prescribed period and thus section 8(1) of the Patents Act and the rules have not been complied with.

An interesting fact to note about the decision is that, the same is (1) based only on the pleadings of the parties and (2) has come after the Opponent withdrew the post-grant opposition in view of settlement between parties. The opponent in fact did not attend the hearing appointed in respect of the opposition for final arguments.

A hearing was fixed in respect of the opposition on 07/11/2017. In response to this the opponent sent a letter apprising the controller that there is a decision by the Hon’ble Delhi High Court regarding a pending infringement suit between the parties wherein the parties have come to a settlement. The Patentee attended the hearing but did not argue the matter on merits and only submitted the said Delhi High Court Order.

The controller held that he has been kept in dark and material facts regarding the suit were kept in hiding by both the applicant and the opponent. Further, the Delhi High court order only take cognizance of the settlement terms agreed upon by both the parties regarding the infringement and there is no provision to withdraw a post grant opposition under the Indian Patents Act. The Controller therefore proceeded with deciding the Opposition on merits even after settlement between the parties.

A cost under section 77 of the Patents Act has also been imposed on both the parties for not keeping the controller informed regarding the suit.

IPO STAKEHOLDERS MEETING – WORKING OF PATENTS

The Indian patent office is holding a stakeholders consultation meeting regarding issues relating to the annual statement of working of Patents under section 146 of the Indian Patents Act on 6th April 2018 at New Delhi.

Prior to the meeting the stakeholders were asked to provide their comments on the issues relating to working of patents. The comments received from various stakeholders (including Anand and Anand) have been published by the Indian Patent Office. 

Stay tuned for more update!

 

 

 

IPO as ISA – the progress so far

The Indian Patent office (IPO) has published an update on India’s progress as an international searching authority. As per the report, the number of Applicants choosing India as a searching authority is on a rise. From 123 in 2013, the count rose to 711 in the year 2015-16 and 940 in 2016-17. (Period from 31st March to 1st April).

In fact, more than 50% of Indian Applicants in year’s 2015-16 and 2016-17 have chosen India as the searching authority. The reason for this steep increase could be reduced cost, or the availability of the option of applying for expedited examination of the Indian National phase application. Applicants choosing India as the searching authority (ISA) or IPEA are eligible for expedited examination of corresponding national phase application in India. The examination report in such cases are being issued within 2 months from date of request of expedited examination and the final decision in respect of the application is taken within three months from date of reply by the Applicant.

 

Electronic Patent Certificate

The process relating to  issuance of Patent certificates has been fully automated by the Indian Patent Office.

As per the notification of the Patent office, from 3rd July 2017 the patent certificates will be generated through an automated system after the patent is granted by the Controller and shall be made available to the applicants concerned or their authorized patent agents on record. The patent certificate so generated will be transmitted to the applicant concerned or his authorised patent agent on record on his email address recorded and would also be made available on the official website (www.ipindia.gov.in) along with status of the application concerned.

 

Positive Ruling for Godrej by Bombay High Court

In a writ petition by Godrej and Boyce Manufacturing Company vs. The Deputy Controller of Patents and Designs, the High Court of Bombay held that the decision of the Patent office to remove Godrej’s patent from the registered of patent was hyper technical and extreme.

The Court ruled that it would be accepted by the Patent Office that the Petitioner had indeed paid the renewal fees and thus the patent cannot be removed from the Register of Patents and no coercive action can be taken in relation thereto. The Court held that the Petitioner can proceed on the footing that their patent is registered and can assert their rights based on said registration.

The Court further went on to question the Patent Office and disputed their non-acceptance of renewable fees for the registered patent of the petitioners for the year of 2007, especially when they had been accepted for prior years and even for the years subsequent to 2007.

Cancer drug (Enzalutamide) Patent application refused

5 Oppositions were filed against Indian patent application No. 9668/DELNP/2007 covering the drug product Enzalutamide and the same have been decided by Controller Umesh Chandra Pandey in an order dated 8th November 2016. The Controller has refused the application and held that the invention though is novel however the same lacks inventive step and is not patentable under section 3(d) and 3(e) of the Act.

 The claims of the application were directed to Enzalutamide. Claim 2 and 3 were directed to a composition and method of preparation of the same compound respectively.  The main highlights of the decision are as follows:-

Novelty: As per the Controller none of the cited documents specifically discloses the structure of the compound as claimed in either a claim or in an example and therefore the same is novel. Rather a person has to pick some suitable substituents from the definition given in markush structure as given in prior art and suitably put them to arrive at the structure of the claimed compound, Enzalutamide. This type of picking and putting is not allowable to ascertain the Novelty of the claimed invention.

Inventive step:  US’981, one of the prior art cited by the Opponent discloses a compound of example 15 which is represented herein below

1.png

The difference between the compound of example 15 and Enzalutamide is FLUORO-N-METHYLBENZAMIDE at 1st Nitrogen of thiohydantoin moiety.

Another cited document, J Med Chem. 2004 Jul15;47(15), 3765-16, (D1) motivates the selection of fluoro-N-methylbenzamide. Although D1 does not talk about methylcarbamoyl group instead it suggested acetamido group which is different than the methylcarbamoyl group. But the controller accepted the Opponents argument, that D1 suggests that, only a moderately sized group can be accommodated specifically at para position. Further, D1 suggests that groups such as acetamido (molecular formula C2H4NO) can be favored. Therefore, in view of teachings of D1 the applicant has selected aryl ring substituted with methylcarbamoyl specifically at para-position.

The controller also held that the invention is obvious when US’981 is seen in view of US’257 in combination with D1. The controller also considered US’257 which describes a compound of the formula as shown below:

2

Taking in view of teachings of D1 a person skilled in the art will think of replacing the moiety sown in rectangle of US’257 compound with hydrogen attached to N of hydantoin moiety of the compound 15 of US’981. The invention was therefore considered as obvious.

Section 3(d): As per the Controller the claimed compound Enzalutamide is lacking novelty and inventive step and therefore the said compound is a new chemical entity is not acceptable and falls under section 3(d)

Section 3(e): As per the Controller invention fails to show any surprising synergistic effect when the said compound is used as a composition. Therefore opponent’s objection regarding section 3(e) of Patent Act is found to be acceptable.

Lack of Sufficiency: As per the controller the impugned invention has been sufficiently disclosed in the patent application. Enzalutamide is specifically disclosed as Example 56 and its process for preparation is also disclosed. Data for Enzulatamide has been given in the specification and also in-vivo data has been provided in clinical trials.

Requirement of Section 8(1) and 8(2) was complied on different dates by filing the information about filing detail in other jurisdiction.

An objection was also raised by one of the opponents on insufficient fees for the claims paid at the time of filing of the application. But the controller held that at the time of entering in to the national phase the applicant may delete the claims and pay fees for less claims. In this regard reliance on honorable IPAB decision 17 of 2013 was made by the applicant. Moreover as per the amendment Rules 2006 and new rule 20(1) the patent application may be filed by deleting the claims form the claims filed in PCT application. The Controller therefore rejected this ground.